DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/1/2026 has been entered.
Claims 1-3, 5, 8-15, 17-18, 21-25 are pending. Claims 10-15 are withdrawn. Prior objections and rejections not included below are withdrawn in view of Applicant’s arguments and amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-3, 5, 8-9, 17-18, 21-25 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites a limitation wherein the amount of water and ethanol “is reduced by a factor of at least 1.5 compared to the initial flavor composition” to produce a “dehydrated and de-alcoholized flavor composition”. The instant Specification states (Page 8, Lines 1-5) that the “amount of water and ethanol from the flavor composition compared to the dehydrated and de-alcoholized flavor composition is reduced in said flavor composition by a factor of at least 1.5”. The inventive flavor composition is therefore reduced in water and ethanol content compared to a dehydrated and de-alcoholized flavor composition, which is inconsistent with the Claim.
Additionally, the instant Specification lack written support for the removal of the claimed amount of water and ethanol “using a single hydrophilic membrane”. Page 9 recites that the dehydration and dealcoholization process are “conducted by two subsequent processes” (Page 9, Lines 10-11). Page 4 recites that the “dehydration process…is conducted using a membrane, preferably [a] hydrophilic membrane]” (Page 4, Lines 7-8) and additionally that the “hydrophilic membrane comprises a zeolite” (Page 4, Line 30). Page 6, Lines 14-15 recite that ethanol is removed via vacuum distillation. Examples 1 and 2 (Pages 17-18) provide for water removal via an NaA zeolite, and separate distillation process to remove ethanol. Example 3.2 (Pages 18-19) recites removal of both water and ethanol via distillation (not membrane separation). Example 3.3 (Page 19) removes water (but not ethanol) via pervaporation with an NaA zeolite. However, there does not appear to be support for “a single hydrophilic membrane comprising a zeolite” that reduces both the amount of water and the amount of ethanol by a factor of at least 1.5 as claimed.
Claims 2-3, 5, 8-9, 17-18, 21-25 depend from independent Claim 1 and are therefore also rejected.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 8, 9, 17-18, and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Vane (US 2004/0000521 A1) in view of Gao (“Application of zeolite-filled pervaporation membrane”, DOI: 10.1016/0144-2449(95)00094-1, May 1998).
Regarding Claims 1 and 22, Vane teaches a method for removing both ethanol and water from a composition comprising flavors and aromas [0005]. The method utilizes a zeolite membrane [0067]. Vane teaches that any type of membrane that offers a good separation factor between ethanol and water is suitable for the method [0062].
Vane does not specifically teach the use of a hydrophilic zeolite membrane.
Gao teaches that a hydrophilic polyvinyl alcohol membrane filled with NaA zeolite (Abstract) provides good flux and separation factors (Page 74, Conclusion) in ethanol-water mixtures (Page 72, Table 3).
Regarding the limitation that the amount of water is reduced by a factor of at least 1.5, where Vance teaches the benefits of removing water and ethanol from a flavor composition, e.g. concentration of flavor [0058], one of ordinary skill would have been able to have adjusted the amount of water and ethanol removed to have arrived at ratios as claimed through no more than routine experimentation.
Regarding Claim 2, Vane teaches that the membrane may be used to treat a feed in liquid phase with dissolved organics, which is a solution [0049]. Note that a solution with some ethanol and water removed is also a solution.
Regarding Claim 3, Gao teaches that the feed of an ethanol-water mixture is 80% ethanol and 20% water (Page 71, “Molecular sieving effect of zeolites in the membrane”, Paragraph 1). Given the range of the claimed composition, the composition of Gao is interpreted the meet the compositional limitation. Note that the claim does not require that the flavor composition be either the feed or permeate of the membrane.
Regarding Claim 8, Vane additionally teaches distillation [0023-0024].
Regarding Claim 9, Vane teaches the removal of both water and ethanol as discussed above in regard to Claim 1, but does not specifically address the amount of removed water and ethanol. However, where Vance teaches the benefits of removing water and ethanol from a flavor composition, e.g. concentration of flavor [0058], one of ordinary skill would have been able to have adjusted the amount of water and ethanol removed to have arrived at ratios as claimed through no more than routine experimentation.
Regarding Claim 17, Vane teaches that for an ethanol-water mixture, the final ethanol-enriched product comprises 90% ethanol (Page 13, Table 6, “Overhead EtOH”), which touches the claimed range. Note that since the mixture is ethanol and water, Vane additionally teaches that the product is 10% water.
Regarding Claim 18, Vane teaches the removal of both water and ethanol as discussed above in regards to Claim 1. Vane therefore teaches that the flavor composition has a decreased ethanolic content compared to the feed (starting) material.
Regarding Claim 23, Gao teaches the use of PVA (Abstract).
Regarding Claim 24, Vane teaches that the flavor composition is enriched in organic compounds “up to 90%” [0013] but does not specifically address the claimed flavor compounds. However, where Vane teaches the concentration of aromas and flavours [0005], it would have been obvious to have enriched any flavor compounds, including the compounds claimed.
Regarding Claim 25, Vane teaches pervaporation [0017].
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Vane in view of Gao, taken with evidentiary reference of Zhang (“Synthesis of zeolite NaA at room temperature: The effect of synthesis parameters on crystal size and its size distribution”, DOI: 10.1016/j.apt.2012.12.010, January 2013.
Regarding Claim 21, modified Vane teaches an NaA zeolite membrane as discussed above in regard to Claim 1.
Zhang teaches that the pore size of an NaA zeolite membrane ranges from 3-5 Angstroms, which is 0.3-0.5 nm. Therefore, the membrane of modified Vane has the pore size as claimed.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Vane in view of Gao as applied to Claim 1, above, and further in view of Grainger, et al. (“Wine Production Vine to Bottle”, https://vinumvine.wordpress.com/wp-content/uploads/2012/02/keith-grainger-hazel-tattersall-wine-production-vine-to-bottle.pdf, 2005, reference is made to the provided excerpt).
Regarding Claim 5, Vane teaches that any appropriate additional treatment of the solution [0023] may be performed, but does not specifically address reverse osmosis.
Grainger teaches that reverse osmosis is an effective method for removing water and concentrating flavour components in a grape must (grape juice) (Section 12.6.1), and also for removing ethanol in an over-concentrated composition.
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize reverse osmosis in the composition of Vane. One would have been motivated to make such a modification since Vane teaches separation of a water phase from an organic phase, and Grainger teaches a method appropriate for such a separation.
Response to Arguments
Regarding the rejections under 35 U.S.C. 103, note that the rejection has been modified to address the amended claims as discussed above.
With a view towards compact prosecution, Examiner notes that in regard to Applicant’s arguments (Pages 6-8) regarding the separation factors of membranes, a high separation factor between components does not necessarily result in “incidental” removal of either component. For instance, Gao discloses a membrane with a separation factor of 36.6 between water and ethanol (Pages 72, Table 3). Thus, for a feed consisting of (say) 20% water and 80% ethanol, the permeate consists of 90% water and 10% ethanol (See Page 71, Column 1, equation). However, no general conclusion can be drawn regarding the total mass flow of either component absent information regarding feed and membrane flux, e.g. the total mass flow through the membrane. Membrane flux depends on process conditions that are independent of individual membrane properties.
Additionally, note that the claim does not require that the flavor composition be either the permeate or retained feed. If the membrane flux is low, the permeate of the membrane may meet the mass reduction requirements according to the Claim. If the membrane flux is high, the retained feed may meet the mass reduction requirements according to the Claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
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/D.L./ Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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